reputation

Delhi High Court Ruling on ‘NOKUF’ Trademark: A Sign of Things to Come in Indian Pharma Branding?

The Delhi High Court’s recent decision in Sana Herbals Private Limited v. Mohsin Dehlvi & Anr. (FAO (COMM) 77/2025) isn’t just a win for Dehlvi Remedies; it’s a potential bellwether for how Indian courts will approach trademark disputes in the increasingly competitive Ayurvedic and pharmaceutical sectors. The court upheld Dehlvi Remedies’ right to continue using the “NOKUF” mark for its cough syrups, citing prior use dating back to 1994, effectively trumping Sana Herbals’ later trademark registration and claims of goodwill.

The Power of Prior Use: A Cornerstone of Trademark Law

This case underscores a fundamental principle of trademark law: prior use often outweighs registration. While registering a trademark provides legal benefits, it doesn’t automatically grant exclusive rights. If another party can demonstrate continuous use of a similar mark *before* the registration date, they can often successfully defend their right to continue using it. This is particularly relevant in India, where a significant portion of businesses, especially smaller Ayurvedic firms, historically relied on established usage rather than formal registration.

“The court’s emphasis on Dehlvi Remedies’ use since 1994 is crucial,” explains Senior Advocate J. Sai Deepak, who represented Sana Herbals. “It highlights the importance of establishing a consistent market presence, even without immediate registration.”

Ayurvedic Branding Battles: A Growing Trend

The rise of Ayurvedic medicine, fueled by a growing consumer interest in natural remedies and a reported market size exceeding $18 billion in 2023, is inevitably leading to more branding conflicts. Companies are vying for recognition in a sector traditionally characterized by generic names and locally-known formulations. This case demonstrates that simply registering a trademark isn’t enough; companies must actively protect their brand and be prepared to defend their rights based on actual market usage.

Pro Tip: Don’t solely rely on trademark registration. Conduct thorough searches for existing marks *before* launching a new product and document your own usage meticulously.

The ‘Passing Off’ Argument: A Narrowing Path?

Sana Herbals also attempted to argue “passing off” – that Dehlvi Remedies’ use of “NOKUF” would mislead consumers into believing their products were associated. However, the court found Sana Herbals hadn’t demonstrated sufficient prior goodwill or that Dehlvi Remedies’ use was intentionally deceptive. This suggests courts are becoming more stringent in evaluating passing off claims, particularly when a prior user can demonstrate legitimate, long-term use of the mark.

Assignment Deeds and Goodwill: A Critical Link

The court’s scrutiny of the assignment deed presented by Sana Herbals is another key takeaway. The deed, executed under the 1958 Trade and Merchandise Marks Act, didn’t explicitly transfer goodwill. This highlights a critical point: trademark assignments must clearly convey *both* the mark and the associated goodwill to be legally effective. This is a common pitfall in older assignments and underscores the need for careful due diligence during acquisitions or transfers of trademark rights.

Abandonment: More Than Just Non-Use

Sana Herbals argued that Dehlvi Remedies had abandoned the “NOKUF” mark due to non-use. The court dismissed this, stating that non-use is a matter for rectification proceedings – a formal legal process to remove a trademark from the register – and isn’t sufficient grounds for an interim injunction. This clarifies that simply observing a period of non-use doesn’t automatically invalidate a trademark; a formal legal challenge is required.

Future Trends: What to Expect

Several trends are emerging from this case and similar disputes:

• Increased Litigation: Expect a surge in trademark battles as the Ayurvedic and pharmaceutical sectors continue to grow.
• Focus on Empirical Evidence: Courts will increasingly rely on evidence of actual market usage, sales data, and consumer surveys to determine trademark rights.
• Stricter Scrutiny of Passing Off Claims: Plaintiffs will need to present compelling evidence of prior goodwill and intentional deception to succeed in passing off actions.
• Importance of Comprehensive Trademark Audits: Companies will need to conduct regular audits of their trademark portfolios to identify potential vulnerabilities and ensure their rights are adequately protected.

Did you know? India’s trademark registry is undergoing a modernization process aimed at improving efficiency and transparency. This could lead to faster processing times and more accurate records, but also potentially more challenges to existing registrations.

FAQ

• What is ‘prior use’ in trademark law? Prior use refers to the continuous and legitimate use of a trademark in the marketplace before another party registers it.
• What is ‘passing off’? Passing off is a legal claim that arises when one party misrepresents its goods or services as being those of another, causing confusion among consumers.
• Is trademark registration essential? While not always decisive, trademark registration provides significant legal advantages and is highly recommended.
• What is goodwill in the context of trademarks? Goodwill represents the reputation and customer loyalty associated with a particular brand.

This ruling serves as a valuable lesson for businesses operating in India’s dynamic pharmaceutical and Ayurvedic landscape. Proactive trademark management, diligent documentation of usage, and a clear understanding of the legal principles governing trademark rights are essential for protecting your brand and avoiding costly disputes.

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